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Phantomalert, Inc. v. Google Inc.

Dec 14, 2015
Case No. 15-cv-03986-JCS (N.D. Cal. Dec. 14, 2015)


Case No. 15-cv-03986-JCS


PHANTOMALERT, INC., Plaintiff, v. GOOGLE INC., et al., Defendants.


Re: Dkt. No. 19


Plaintiff PhantomALERT, Inc. ("PhantomALERT") has created navigation applications for mobile telephones and GPS devices and maintains a proprietary database ("the Points of Interest database") that is used with these applications (the "Apps"). PhantomALERT alleges that Defendants Google Inc. ("Google") and Waze, Inc. ("Waze") copied the Points of Interest database and are using it for their own benefit. Based on these allegations, Plaintiff asserts copyright infringement and conversion claims against Google and Waze. Defendants bring a Motion to Dismiss ("the Motion") seeking dismissal of all of Plaintiff's claims. A hearing on the Motion was held on December 4, 2015 at 9:30 a.m. For the reasons stated below, the Motion is GRANTED in part.

The parties have consented to the jurisdiction of the undersigned magistrate judge pursuant to 28 U.S.C. § 636(c).


A. The Complaint

PhantomALERT is a Delaware corporation with its primary place of business in the District of Columbia. Compl. ¶ 13. According to Plaintiff, both Google and Waze are Delaware corporations with their primary offices in Mountain View, California. Id. ¶¶ 14-15.

Plaintiff alleges that it "has created Global Positioning System ('GPS')-based navigation applications for mobile phones and GPS devices" that "notify users of the location of traffic conditions, road hazards, and traffic enforcement monitors, such as speed cameras (collectively, the 'Points of Interest')." Id. ¶¶ 1-2. It licenses these Apps to end-users and to GPS device manufacturers. Id. ¶ 2. PhantomALERT alleges that "[o]ver the last seven years, [it] has engaged in a systematic process of identifying the Points of Interest for its Apps, evaluating which Points of Interest would be of importance to users of the Apps, vetting the accuracy of the Points of Interest, organizing the Points of Interest, and refining the data associated with the Points of Interest." Id. ¶ 3. According to PhantomALERT, it created and maintains a proprietary database of these Points of Interest (the "Database" or the "Points of Interest database"), which can be accessed in real time by its Apps and displayed on a GPS-generated electronic map. Id. ¶ 4. PhantomALERT applied for a registration with the United States Copyright Office and on August 20, 2015, the U.S. Copyright Office issued a copyright registration, No. TXu001954208, covering its App source code and its Points of Interest database as a compilation. Id. ¶¶ 5, 26.

PhantomALERT alleges that it began developing its Apps in 2008. Id. ¶ 17. It alleges that it "uses a systematic process for selecting, coordinating, and arranging information about the Points of Interest," whereby it first allows users to "submit potential Points of Interest to PhantomALERT through the Apps" and then "evaluates whether a Point of Interest submitted by a user is a genuine Point of Interest based on a proprietary formula as well as human judgment." Id. ¶¶ 19-21. If PhantomALERT decides that a Point of Interest should be included in the Database, it then "refines the geographic and other data associated with the Point of Interest so that the Point of Interest is displayed in the most helpful location on users' GPS-generated maps, with the optimal amount of advance warning to the user." Id. ¶ 22. Finally, "PhantomALERT reviews the timing of the various users' reports for a particular Point of Interest to ensure that the Point of Interest remains relevant." Id. ¶ 23. Thus, for example, a speed trap may be removed from the database if there have been no recent reports of the trap. Id.

PhantomALERT alleges that Defendant Waze is a wholly owned subsidiary of Waze Mobile Ltd., an Israeli Company formed in 2007. Id. ¶ 27. According to Plaintiff, Waze competed with PhantomALERT by operating a GPS-based application that "provides route information and traffic details, including accidents, congestion, and speed and police traps" until June 2013, when "Google acquired all of the assets and liabilities of Waze, and Waze was merged into Google." Id. ¶¶ 28, 31. PhantomALERT alleges that Google has operated the Waze app since it acquired Waze. Id. ¶ 32.

According to Plaintiff, on July 30, 2010, the CEO of Waze sent the CEO of PhantomALERT an email proposing that the two companies cooperate in the operation of their respective GPS-mapping companies. Id. ¶ 33. In a telephone conversation the same day, Waze's CEO proposed that the companies exchange their respective Points of Interest databases, but PhantomALERT's CEO declined the offer because "Waze did not appear to have substantial data to share." Id. ¶ 34. Plaintiff alleges, on information and belief, that in late 2012 "Waze copied the PhantomALERT Points of Interest database in its entirety . . . without any authorization or consent." Id. ¶ 45. Plaintiff further alleges, on information and belief, that "Waze copied the PhantomALERT Points of Interest database on multiple, additional occasions as the database was updated, starting in or around late 2012." Id. ¶ 36. PhantomALERT alleges that the data was incorporated in modified form into Waze's database and could be viewed by users of the Waze application. Id. ¶¶ 37-38. According to PhantomALERT, it "determined that Waze had copied its Points of Interest database by observing the presence of fictitious Points of Interest in the Waze application, which PhantomALERT had seeded into its own database for the purpose of detecting copying." Id. ¶ 39. PhantomALERT alleges that Defendants have "wrongfully profited from their copying and use of the PhantomALERT Points of Interest database, and PhantomALERT has been harmed." Id. ¶ 8.

Plaintiff asserts claims for copyright infringement and conversion against Waze and Google. In the Copyright cause of action, Plaintiff alleges that its Points of Interest database is an "original, creative work" and that it is protected as a compilation under a valid copyright registration, No. TXu001954208. Id. ¶¶ 44-45. Plaintiff alleges, on information and belief, that Defendants copied and reproduced the Database without its consent and "prepared derivative works" of the Database. Id. ¶¶ 46-47. According to Plaintiff, the Database, or "derivative works thereof," were publicly displayed by Defendants starting in late 2012 and continuing past June 2013. Id. ¶¶ 49-50. According to PhantomALERT, "in June 2013, Google acquired all of Waze's liabilities, including all liability associated with Waze's copyright infringement." Id. ¶ 51. In addition, Plaintiff alleges on information and belief that "following Google's acquisition of Waze, Google incorporated aspects of the Waze application, including information from the PhantomALERT Points of Interest database, into Google's own mapping services" and that it "reproduced the information from the Points of Interest database, created derivative works from the information, displayed the information, and sold or leased the information to users through an end user license agreement." Id. ¶ 52.

In the conversion cause of action, PhantomALERT alleges that it owns the Database, that Waze copied the Database and "incorporated the data into the Waze application, thereby disposing of PhantomALERT's property in a manner inconsistent with PhantomALERT's possession of that property" and that "Google acquired all of Waze's liabilities, including all liability associated with Waze's wrongful conversion of the PhantomALERT database." Id. ¶¶ 55-57.

In the Prayer, Plaintiff asks the Court to award compensatory damages for its own lost profits and Defendants' wrongful profits, "including through the calculation of a reasonable royalty" under the Copyright Act and to enjoin Defendants' operation of the Waze website and app. Id. at 8.

B. Contentions of the Parties

In the Motion, Defendants assert that Plaintiff's claims should be dismissed under Rule 12(b)(6) of the Federal Rules of Civil Procedure because: 1) neither the information contained in the Points of Interest database nor the Database as a whole is protectable under copyright law and in any event, the claim is insufficiently pled; 2) the conversion claim is preempted by federal copyright law and Plaintiff has not alleged the required element of dispossession; and 3) both claims fail as to Google because facts subject to judicial notice establish that Google is merely an acquiring shareholder of Waze and therefore is not liable for the past acts of Waze; moreover, allegations that Google used data it obtained from the Waze database in its own application are insufficient because Plaintiff does not allege Google had access to or copied Plaintiff's Database and the data are unprotectable facts. Motion at 1-3.

Defendants contend the copyright claim fails because Plaintiff alleges that Defendants copied only facts, which are not subject to copyright protection. Id. at 5-6 (citing Feist Publ'ns, Inc. v. Rural Tel. Serv. Co, 499 U.S. 340, 361 (1991)). Even if the "facts" are false, Defendants argue, they are afforded no copyright protection. Id. at 6 (citing BanxCorp v. Costco Wholesale Corp., 978 F. Supp. 2d 280, 304 (S.D.N.Y. 2013); Nester's Map & Guide Corp. v. Hagstrom Map Co., 796 F. Supp. 729, 733 (E.D.N.Y. 1992); Alexandria Drafting Co. v. Amsterdam, No. CIV. A. 95-1987, 1997 WL 325769, at *8 (E.D. Pa. June 4, 1997); RAYMOND T. NIMMER, 1 INFORMATION LAW § 3:24 (2015); WILLIAM F. PATRY, 2 PATRY ON COPYRIGHT § 3:117 (2015)). Further, Defendants argue that Plaintiff only alleges that some of the Points of Interest from its Database appeared on the Waze app; aside from conclusory allegations, Plaintiff does not allege that Defendants copied the Database's "particular selection or arrangement." Id. at 6. These Points of Interest are purely factual and do not constitute original material, Defendants contend. Id. at 6-7 (citing Streetwise Maps, Inc. v. VanDam, Inc., 159 F.3d 739, 747-48 (2d Cir. 1998); Assessment Technologies of WI, LLC v. WIREdata, Inc., 350 F.3d 640, 646 (7th Cir. 2003)).

Defendants argue further that even if Plaintiff alleged that Defendants copied the particular selection and arrangement of facts in the Database, the copyright claim fails because the Database was compiled based on purely functional considerations and therefore, the process used to create the database is not expressive. Id. at 8-9 (citing Baker v. Selden, 101 U.S. 99-100 (1879); Bikram's Yoga College v. Evolation Yoga, 803 F.3d 1032 (9th Cir. Oct. 8, 2015)).

Finally, Defendants contend the copyright claim is inadequately pled because Plaintiff failed to allege any specific facts showing that Defendants had access to the Database. Id. at 9-10 (citing Rice v. Fox Broad. Co., 330 F.3d 1170, 1174 (9th Cir. 2003); Richtek Tech. Corp. v. UPI Semiconductor Corp., No. C 09-05659 WHA, 2011 WL 166198, at *3 (N.D. Cal. Jan. 18, 2011)).

Defendants argue that the conversion claim should be dismissed because it is preempted by federal law, asserting that "[w]hen the claim for conversion is nothing more than unauthorized reproduction of an intangible work, as opposed to actually taking another's physical property for oneself, the Copyright Act preempts the claim." Id. at 10-11 (citing Firoozye v. Earthlink Network, 153 F. Supp. 2d 1115, 1130 (N.D. Cal. 2001)). Defendants further assert the conversion claim fails because Plaintiff has not alleged deprivation of ownership of the Database, a required element of conversion. Id. at 11 (citing Kremen v. Cohen, 337 F.3d 1024, 1030-31 (9th Cir. 2003); Cardonet, Inc. v. IBM Corp, No.C-06-06637 RMW, 2008 WL 941707 (N.D. Cal. Apr. 7, 2008)). In particular, Defendants contend, Plaintiff has alleged "mere copying of information where the plaintiff still has full possession of that information . . . ." Id. (citing FMC Corp. v. Capital Cities/ABCInc, 915 F.2d 300, 303-04 (7th Cir. 1990); Opperman v. Path, Inc., 87 F. Supp. 3d 1018, 1056 n.22 (N.D. Cal. 2014)).

Defendants also challenge the assertion of both the copyright claim and the conversion claim against Google to the extent they are based on Google's alleged acquisition of Waze's liabilities. Id. at 12-13. First, they assert, Plaintiff seeks to impose liability on Google based on its alleged acquisition of Waze in an asset purchase in 2013, but facts subject to judicial notice show that this allegation is false and that Google is actually an acquiring shareholder. Id. at 12. In particular, Defendants offer a copy of a certificate, dated October 5, 2015, from the Delaware Secretary of State that Waze, Inc. is a Delaware corporation and is in good standing. Maitra Decl., Ex. 1. In addition, they have filed their Corporate Disclosure Statement under Rule 7.1 of the Federal Rules of Civil Procedure, in which Defendants' counsel states that "Waze Inc. is a wholly owned subsidiary of Google Inc." Docket No. 20. According to Defendants, an acquiring shareholder cannot be held liable for the past, present, or future acts of the corporation. Id. (citing U.S. v. Bestfoods, 524 U.S. 51, 61-62 (1998)). Even if Google had acquired all of Waze's assets, Defendants contend, it would not be liable for Waze's past conduct. Id. at 12-13 (citing Maine State Ret. Sys. v. Countrywide Fin. Corp., No. 2:10-CV-0302 MRP, 2011 WL 1765509, at *5 (C.D. Cal. Apr. 20, 2011); Winner Chevrolet, Inc. v. Universal Underwriters Ins. Co., No. CIVS-08539 LKK/JFM, 2008 WL 2693741, at *1 (E.D. Cal. July 1, 2008); Pantoja v. Countrywide Home Loans, Inc., 640 F. Supp. 2d 1177, 1192 (N.D. Cal. 2009)). Finally, Defendants assert, Plaintiff does not allege that Google ever had access to or copied its Database, and the inclusion of specific pieces of information in Google's mapping apps cannot give rise to a copyright claim for the reasons discussed above. Id. at 13.

Although Defendants assert that "facts subject to judicial notice" show that Google was an acquiring shareholder, they have not actually filed a request for judicial notice. --------

PhantomALERT contends its claims are sufficient under Rule 12(b)(6). It argues that the copyright claim is sufficient at the pleading stage because: 1) the Points of Interest database as a whole reflects sufficient creativity to render it protectable under copyright law; 2) the specific points within the Database are protectable because they are not facts, but rather, opinions of PhantomALERT as to what information will be useful to readers; and 3) PhantomALERT is not required to allege that Defendants had access to its database but only that they copied the Database, which Plaintiff alleged in its complaint. Opposition at 2.

PhantomALERT argues that its conversion claim is adequately alleged because it includes additional elements that are not required for a copyright claim - namely, allegations that Defendants copied the Database without authorization and with the intent to steal the Database for their own commercial gain - and therefore, it is not preempted by federal copyright law. In addition, PhantomALERT contends, Defendants' assertion that a dispossession of property is required to state a claim for conversion is incorrect. Id.

PhantomALERT rejects Defendants' argument that its claims are insufficiently alleged as to Google, arguing that it is sufficient to allege that Google engaged in the misconduct and that Google and Waze merged and that Google assumed Waze's liabilities. Id.

In support of its assertion that the Points of Interest database is protectable as a compilation under Feist, Plaintiff points to cases both within the Ninth Circuit and from other jurisdictions it contends show that the requisite level of creativity is "extremely low" and is met under the facts alleged here. Id. at 5-9 (citing CDN Inc. v. Kapes, 197 F.3d 1256 (9th Cir. 1999); Craigslist Inc. v. 3Taps Inc., 942 F. Supp. 2d 962 (N.D. Cal. 2013); Honeywell Int'l, Inc. v. W. Support Grp., Inc., 947 F. Supp. 2d 1077 (D. Ariz. 2013); Salestraq Am., LLC v. Zyskowski, 635 F. Supp. 2d 1178 (D. Nev. 2009); City of New York v. Geodata Plus, LLC, 537 F. Supp. 2d 443 (E.D.N.Y. 2007); Eckes v. Card Prices Update, 736 F.2d 859, 863 (2d Cir. 1984); BUC Int'l Corp. v. Int'l Yacht Council Ltd, 489 F.3d 1129, 1145 (11th Cir. 2007); Mason v. Montgomery Data, Inc., 967 F.2d 135, 141-42 (5th Cir. 1992); Cnty. of Suffolk, New York v. First Am. Real Estate Solutions, 261 F.3d 179, 187-88 (2d Cir. 2001); Metro. Reg'l Info. Sys., Inc. v. Am. Home Realty Network, Inc., 888 F. Supp. 2d 691, 710 (D. Md.) affd, 722 F.3d 591 (4th Cir. 2013)).

PhantomALERT argues that Defendants' reliance on Bikram's Yoga in support of the assertion that the creation of the Database is a process based on functional considerations rather than expression misses the mark. Id. at 9-11. According to Plaintiff, to the extent the court in Bikram's Yoga found that the sequence of yoga positions (asanas) in that case was a process that was not protectable, the facts here are distinguishable because PhantomALERT does not allege that the process for selecting and arranging its Points of Interest is copyrightable. Id. (citing 2015 WL 5845415 at *3). Plaintiff further points to the court's holding in Bikram's Yoga that the book that described the yoga positions was protectable. Id. According to Plaintiff that holding is consistent with the established principal that while an idea, process or procedure is not protectable, the expression of the idea, process or procedure in a tangible medium is protectable so long as it is minimally creative. Id. (citing Bikram's Yoga, 2015 WL 5845415 at *3; Herbert Rosenthal Jewelry Corp. v. Kalpakian, 446 F.2d 738, 741 (9th Cir. 1971); Baker v. Selden, 101 U.S. 99, 101-02 (1879); L.A. Printex Indus., Inc. v. Aeropostale, Inc., 676 F.3d 841 (9th Cir. 2012); McIntosh v. N. California Universal Enterprises Co., 670 F. Supp. 2d 1069, 1096 (E.D. Cal. 2009)). PhantomALERT contends its Points of Interest database is such an expression and therefore is copyrightable. Id.

PhantomALERT further asserts that the individual Points of Interest are copyrightable because it uses its "expertise and judgment" to decide which potential Points of Interest should be included and where they should be placed on the GPS-generated maps so as to provide users with maximum notice while "still preserving the immediacy of the notification." Id. (citing CDN Inc. v. Kapes, 197 F.3d 1256, 1257-60 (9th Cir. 1999) and quoting Compl. ¶ 22). Plaintiff argues that Assessment Technologies of WI, LLC v. WIREdata, Inc., cited by Defendants for the proposition that individual facts cannot be copyrighted, is distinguishable because that case involved undisputed facts that were provided by a third party whereas here, "each of PhantomALERT's Points of Interest reflects a set of data created and modified by PhantomALERT in its judgment and expertise." Id. at 12 (citing 350 F.3d 640, 642 (7th Cir. 2003)).

PhantomALERT rejects Defendants' assertion that the copyright claim fails because Plaintiff has not alleged Defendants had access to the Points of Interest database. Id. at 12-13. According to Plaintiff, the elements of a copyright claim are ownership of the copyright and copying of the constituent elements of the work; while copying may be established by showing that the allegedly infringing work is substantially similar in its protected elements and that the infringing party had access to the work, PhantomALERT contends that "proof of access is just one way to establish unlawful copying, and the amount of access that needs to be proved depends on the similarity of the infringing work." Id. Because Plaintiff has expressly alleged that Waze copied the Points of Interest database in its entirety, it asserts, the copyright claim is adequately alleged. Id. (citing Compl. ¶¶ 35, 41).

PhantomALERT argues that its conversion claim is not preempted and is sufficiently pled. Id. at 13-17. According to Plaintiff, state law claims are preempted by the Copyright Act only when the rights asserted under state law are equivalent to those protected by the Copyright Act and the work involved falls within the "subject matter" of the Copyright Act. Id. at 14 (citing Kodadek v. MTV Networks, Inc., 152 F.3d 1209, 1212 (9th Cir. 1998). Where the state law claim involves an additional element, Plaintiff contends, the rights are not equivalent and there is no preemption. Id. at 14-15 (citing G.S. Rasmussen & Associates, Inc. v. Kalitta Flying Serv., Inc., 958 F.2d 896, 904 (9th Cir. 1992); Opperman v. Path, Inc., 84 F. Supp. 3d 962, 973 (N.D. Cal. 2015)). PhantomALERT argues that the rights are not equivalent here because of its "allegations of Defendants' unauthorized access, intent to steal, and subsequent commercial misuse." Id. at 15. Further, Plaintiff argues that intangible property may be the subject of a conversion claim and that dispossession need not be alleged to state a claim. Id. at 15-17 (citing J & J Sports Prods., Inc. v. Flores, 913 F. Supp. 2d 950, 953 (E.D. Cal. 2012); Mohebbi v. Khazen, 50 F. Supp. 3d 1234, 1257 (N.D. Cal. 2014); Celebrity Chefs Tour, LLC v. Macy's, Inc., 16 F. Supp. 3d 1141, 1151 (S.D. Cal. 2014); Farmers Ins. Exch. v. Zerin, 53 Cal. App. 4th 445, 451-52 (1997)).

Finally, PhantomALERT argues that its express allegation that Google merged with Waze, as well as allegations that Google itself was engaged in misconduct, are sufficient to state claims against Google. Id. at 17-19.


A. Legal Standard Under Rule 12(b)(6)

A complaint may be dismissed for failure to state a claim on which relief can be granted under Rule 12(b)(6) of the Federal Rules of Civil Procedure. Fed. R. Civ. P. 12(b)(6). "The purpose of a motion to dismiss under Rule 12(b)(6) is to test the legal sufficiency of the complaint." N. Star Int'l v. Ariz. Corp. Comm'n, 720 F.2d 578, 581 (9th Cir. 1983). Generally, a plaintiff's burden at the pleading stage is relatively light. Rule 8(a) of the Federal Rules of Civil Procedure states that "[a] pleading which sets forth a claim for relief . . . shall contain . . . a short and plain statement of the claim showing that the pleader is entitled to relief." Fed. R. Civ. P. 8(a).

In ruling on a motion to dismiss under Rule 12(b)(6), the court analyzes the complaint and takes "all allegations of material fact as true and construe[s] them in the light most favorable to the non-moving party." Parks Sch. of Bus. v. Symington, 51 F.3d 1480, 1484 (9th Cir. 1995). Dismissal may be based on a lack of a cognizable legal theory or on the absence of facts that would support a valid theory. Balistreri v. Pacifica Police Dep't, 901 F.2d 696, 699 (9th Cir. 1990). A plaintiff need not plead a prima facie case in order to survive a motion to dismiss pursuant to Rule 12(b)(6). Swierkiewicz v. Sorema N.A., 534 U.S. 506, 514-15 (2002); see also Starr v. Baca, 652 F.3d 1202 (9th Cir. 2011) (reaffirming the holding of Swierkiewicz in light of Ashcroft v. Iqbal, 556 U.S. 662 (2009) and Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007)). A complaint must however "contain either direct or inferential allegations respecting all the material elements necessary to sustain recovery under some viable legal theory." Twombly, 550 U.S. at 562 (citing Car Carriers, Inc. v. Ford Motor Co., 745 F.2d 1101, 1106 (7th Cir. 1984)).

"A pleading that offers 'labels and conclusions' or 'a formulaic recitation of the elements of a cause of action will not do.'" Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 555). "Nor does a complaint suffice if it tenders 'naked assertion[s]' devoid of 'further factual enhancement.'" Id. (quoting Twombly, 550 U.S. at 557). Rather, the claim must be "'plausible on its face,'" meaning that the plaintiff must plead sufficient factual allegations to "allow[] the court to draw the reasonable inference that the defendant is liable for the misconduct alleged." Id. (quoting Twombly, 550 U.S. at 570).

B. Copyright Claim

1. Legal Background: Protection of Facts and Compilations under the Copyright Act

"To establish infringement, two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original." Feist Publ'ns, Inc. v. Rural Tel. Ser. Co, 499 U.S. 340, 345 (1991) (citation omitted). A work is original, under copyright law, so long as it "was independently created by the author (as opposed to copied from other works), and . . . it possesses at least some minimal degree of creativity." Id. at 345 (citation omitted). The amount of creativity required is "extremely low" and does not even require novelty, so long as the similarity to another work is fortuitous and is not the result of copying. Id. The originality requirement is rooted in the Constitution, which "authorizes Congress to 'secur[e] for limited Times to Authors . . . the exclusive Right to their respective Writings.'" Id. at 346 (quoting U.S. Const. art. I, § 8, cl. 8).

Because facts "do not owe their origin to an act of authorship" they are "not 'original' in the constitutional sense." Id. at 347-48. Rather, they are merely "discovered" and "record[ed]." Id. at 347. Therefore, facts - whether "scientific, historical, biographical, [or] news of the day" - may not be copyrighted. Id. Similarly, ideas may not be copyrighted, because "the primary objective of copyright is not to reward the labor of authors, but to '[p]romote the Progress of Science and the Useful Arts.'" Id. at 349 (quoting U.S. Const. art. I, § 8, cl. 8). Thus, while "copyright assures authors the right to their original expression, . . . [it] encourages others to build freely upon the ideas and information conveyed by the work." Id. (citing Harper & Row Publishers, Inc. v. Nation Enterprises, 471 U.S. 539, 556 (1985)). This dichotomy is referred to as the "idea/expression or fact/expression dichotomy." Id. at 350.

While facts alone may not be copyrighted, a factual compilation "may possess the requisite originality" for copyright protection where the author of the compilation has exercised "a minimal degree of creativity" as to "selection and arrangement" of the facts contained in a compilation. Id. at 348 (citations omitted). The copyright protection afforded a factual compilation is "thin," however, because the facts contained in the compilation are not protected. Id. at 349. Consequently, the "copyright is limited to the particular selection or arrangement" of facts and "a subsequent compiler remains free to use the facts contained in another's publication to aid in preparing a competing work." Id. at 349. Further, "[n]ot every selection, coordination, or arrangement will pass muster"; rather, the "selection, coordination, and arrangement" of the facts in a compilation must be "sufficiently original to trigger copyright protection." Id. at 358. Thus, the Court in Feist observes, "[t]here remains a narrow category of works in which the creative spark is so trivial as to be virtually nonexistent" and those compilations "are incapable of sustaining a valid copyright." Id. at 359 (citation omitted).

These principles are embodied in the Copyright Act of 1976, which revised the Copyright Act of 1909 to:

explain with painstaking clarity that copyright requires originality, § 102(a); that facts are never original, § 102(b); that the copyright in a compilation does not extend to the facts it contains, § 103(b); and that a compilation is copyrightable only to the extent that it features an original selection, coordination, or arrangement, § 101.
Id. at 360. Section 102(a) "sets forth the proper subjects of copyright protection." Bikram's Yoga, 803 F.3d at 1036 (9th Cir. 2015). Section 102(b), "codifies the 'idea/expression dichotomy,'" excluding from protection "any idea, procedure, process, system, method of operation, concept, principle, or discovery, regardless of the form in which it is described, explained, illustrated, or embodied in such work." Id. at 1037 (quoting 29 U.S.C. § 102(b)). Section 103 allows for a copyright in a "compilation or derivative work" but makes clear that "[t]he copyright in a compilation or derivative work extends only to the material contributed by the author of such work, as distinguished from the preexisting material employed in the work, and does not imply any exclusive right in the preexisting material." 29 U.S.C. §§ 103(a) & (b). Section 101 defines "compilation" as "a work formed by the collection and assembling of preexisting materials or of data that are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship." 29 U.S.C. § 101.

2. Feist and Bikram's Yoga

Feist and Bikram's Yoga illustrate the principles discussed above. Because both Plaintiff and Defendants contend these decisions support their positions, the Court summarizes here the basic facts and holdings of these cases.

Feist involved the assertion of copyright claims by a public telephone utility ("Rural") against the publisher of an area-wide telephone directory ("Feist") based on the undisputed fact that Feist had copied listings from Rural's "white pages" and included them in its own directory after Rural refused to license its listings to Feist. 499 U.S. at 343-44. As a result of the copying, over a thousand of Feist's listings out of a total of almost 47,000 listings were identical to listings in Rural's white pages. Id. at 344. As in this case, Rural had "seeded" its own directory with some fictitious listings, and four of those were included in Feist's directory as well. Id. The district court relied on a "string of lower court cases" in which telephone directories were found to be copyrightable to rule in Rural's favor and the Court of Appeals affirmed. The Supreme Court reversed. The Court found that the lower courts that had afforded copyright protection to telephone directories had incorrectly relied on the "sweat of the brow" that went into compiling the directories while "eschew[ing] the most fundamental axiom of copyright law - that no one may copyright facts or ideas." Id. at 344, 353.

The Court in Feist went on to address whether either the "raw data" or Rural's arrangement and coordination of the data into a compilation reflected sufficient originality to render them copyrightable and found that they did not. Id. at 361-363. In particular, the Court found that Rural merely discovered and reported the names, addresses and telephone numbers that were copied and therefore, that there was nothing original in that data. Id. at 361. As to the coordination and arrangement of the data in Rural's directory, the Court found that there was "nothing remotely creative about arranging names alphabetically in a white pages directory" and that such an arrangement was "an age-old practice, firmly rooted in tradition and so commonplace that it has come to be expected as a matter of course." Id. at 363. The Court concluded, "[i]t is not only unoriginal, it is practically inevitable." Id. Consequently, the Court concluded that Feist's copying of data from Rural's white pages did not constitute infringement. Id. at 364.

In Bikram's Yoga, the Ninth Circuit addressed whether a sequence of twenty-six yoga poses and two breathing exercises developed by Bikram Choudhury ("the Sequence") and described in his book were entitled to copyright protection. 803 F.3d at 1034. Plaintiff Bikram's Yoga College of India, L.P. ("Bikram's Yoga") sued defendant Evolation Yoga, LLC ("Evolation") and two individuals for copyright infringement based on their use of the Sequence in their yoga classes. Id. at 1036. The court held that the Sequence of poses was an "idea, process or system designed to improve health" and therefore, was unprotectable under copyright law even though the expression of the idea was protected. Id. Because copyright protection of the Sequence would run afoul of the idea/expression dichotomy of § 102(b), the court held, the Sequence also was not protectable as a compilation. Id.

In its analysis, the court began by recognizing that the "idea/expression dichotomy 'strike[s] a definitional balance between the First Amendment and the Copyright Act by permitting free communication of facts while still protecting an author's expression.'" Id. at 1037 (quoting Harper & Row Publishers v. Nation Enters., 471 U.S. 539, 556 (1985)). This balance is reflected in Baker v. Seldin, 101 U.S. 99 (1879), in which the Supreme Court held that a book that explained a system of book-keeping was entitled to copyright protection but the system of book-keeping itself was not protectable, "thus recognizing the vital distinction between ideas and expression." Id. Based on this distinction, the court said, "courts have routinely held that the copyright for a work describing how to perform a process does not extend to the process itself." Id. at 1037-38 (citing Palmer v. Braun, 287 F.3d 1325 (11th Cir. 2002) (holding that that meditation exercises described in a copyrighted manual were not themselves protectable because they described a process for achieving enhanced consciousness); Publications International, Ltd. v. Meredith Corp, 88 F.3d 473 (7th Cir.1996) (holding that recipes in a copyrighted cookbook were not protectable because they described procedures for making food); Seltzer v. Sunbrock, 22 F.Supp. 621 (S.D.Cal. 1938) (holding that copyright in a manual describing how to run roller-skating races did not extend to rules of rollerskating described in the manual)). Similarly, the Ninth Circuit reasoned, the copyright protection for Bikram Choudhury's book does not extend to the Sequence itself because it is "a system designed to yield physical benefits and a sense of well-being" and therefore is unprotectable under § 102(b).

The court goes on to address whether the Sequence is entitled to copyright protection as a compilation. Id. at 1041. Looking to Feist, the court found that even though a compilation may be a proper subject of copyright, "[t]he availability of copyright protection for compilations . . . does not eliminate Section 102's categorical bar on copyright protection for ideas." Id. (citing 499 U.S. at 350-51). Thus, the fact that the Sequence contains "many constituent parts does not transform it into a proper subject of copyright protection." Id. Further, the court reasoned, "the medical and functional considerations at the heart of the Sequence compel the very selection and arrangement of poses and breathing exercises for which [the plaintiff] claim[ed] copyright protection." Id. at 1042. In other words, the court held, "the overarching reason for the organization of the poses and breathing exercises in the Sequence is to further the basic goals of the method." Id. The court concluded, "[t]he Sequence's composition renders it more effective as a process or system, but not any more suitable for copyright protection as an original work of authorship." Id.

3. Whether PhantomALERT has Sufficiently Alleged a Protectable Interest in the Specific Points of Interest

PhantomALERT contends the individual facts in its Points of Interest Database are protectable because "each Point of Interest reflects data that PhantomALERT has selected and modified to provide users with PhantomALERT's 'best guess' as to the most valuable and useful traffic information.'" Opposition at 12. In addition, PhantomALERT argues that it uses its "expertise and judgment in deciding where to place a speed camera on its GPS-generated maps." Id. The Court finds PhantomALERT's arguments unpersuasive.

It is apparent from the allegations in the Complaint that Plaintiff's Points of Interest are inherently factual, involving "traffic conditions, speed restrictions, and police-monitors," that is, objective facts that can be discovered and reported. Compl. ¶ 17. The Supreme Court has made clear that facts are not copyrightable, though the creativity associated with the selection and arrangement of those facts in a compilation may be protectable (as discussed below). See Feist, 499 U.S. at 347-48. This rule applies even when the "facts" are inaccurate, as was the case in Feist, where the defendant had copied a handful of false listings that were "seeded" in the plaintiff's directory. Id. at 344. As one court explained, this is because "very often, data fails to be perfectly representative or entirely complete relative to what it is supposed to measure, but the data nevertheless remains fundamentally factual." BanxCorp v. Costco Wholesale Corp, 978 F. Supp. 2d 280, 304 (S.D.N.Y. 2013) (citing Feist, 499 U.S. at 344)). PhantomALERT's assertion that each individual point of interest is protectable, even though it is factual in nature, merely because it was selected for inclusion in its Database flies in the face of this established rule.

Plaintiff's assertion that it exercises judgment as to where on the GPS-generated map the Points of Interest are displayed is also unpersuasive. First, the placement of the Points of Interest on the map is dictated by functional purpose of the apps, namely, the need to give drivers sufficient advance warning as they approaching the Point of Interest; Plaintiff has not alleged any facts suggesting that this determination involves any more creativity than listing names and telephone numbers in alphabetical order, as in Feist. Second, even assuming these determinations regarding the placement of the Points of Interest on the map involve sufficient judgment to meet the creativity requirement, there is no allegation that Defendants have copied this placement of the Points of Interest on their own GPS-generated maps such that the timing of the notifications are the same in Defendants' apps as they are in Plaintiff's.

PhantomALERT's reliance on CDN v. Kapes, 197 F.3d 1256 (9th Cir. 1999) for the assertion that the individual Points of Interest are not facts is unconvincing. In CDN, the Ninth Circuit held that the individual prices listed in a wholesale price guide for collectible coins met the originality requirement because they were not "mere listings of actual prices paid" for the coins, which would not have been copyrightable, but instead, were the defendant's "best estimate of the fair value" of the coins, based on an analytical process that itself involved creativity. 197 F.3d at 1260. In other words, the prices in Kapes were not facts at all but opinions that reflected creativity. In contrast, the Points of Interest in PhantomALERT's Database are inherently factual, as discussed above. Accordingly, the Court finds that the individual Points of Interest in Plaintiff's database are not protectable.

4. Whether PhantomALERT has Sufficiently Alleged a Protectable Interest in the Points of Interest Database as a Whole

Plaintiff also asserts that its Points of Interest database as a whole is copyrightable as a compilation. To establish that the Database is protectable, Plaintiff must allege some facts showing that the Points of Interest "are selected, coordinated, or arranged in such a way that the resulting work as a whole constitutes an original work of authorship." See 29 U.S.C. § 101. Even if Plaintiff can allege facts showing such originality, the copyright protection to which the Database is entitled does not extend beyond the expressive elements and does not cover ideas, systems or processes. The Court concludes that while Plaintiff's allegations may be sufficient to support an inference that the Points of Interest database as whole is an original work of authorship it has not alleged a protectable interest that extends to Defendants' alleged copying.

As a preliminary matter, the Court rejects Defendants' argument that under Bikram's Yoga the Points of Interest database is not entitled to any copyright protection. In that case, the court applied the established rule that "the copyright for a work describing how to perform a process does not extend to the process itself." Id. 803 F.3d at 1037-38 (internal quotations and citation omitted). Defendants contend PhantomALERT is attempting to copyright a "process," pointing to the "process described for arriving at the database." See Motion at 9. While PhantomALERT points to that process to show that its database is an original work of authorship, however, it is not seeking protection for the process itself, in contrast to the plaintiff in Bikram's Yoga.

Defendants also rely on the Ninth Circuit's conclusion in Bikram's Yoga that the yoga sequence in that case was not protectable as a compilation because "medical and functional considerations at the heart of the Sequence compel the very selection and arrangement of poses and breathing exercises for which he claims copyright protection." Id. at 1042. Defendants suggest that this holding means that a compilation is not protectable, even if judgment is exercised in the selection of preexisting material, if the ultimate goal of the compilation is functional. The undersigned finds this reading of Bikram's Yoga to be over-broad. In Bikram's Yoga, the Court held only that the actual sequence was not entitled to protection because it was on the wrong side of the idea/expression dichotomy under §102(b). The fact that judgment may have been exercised in the creation of the sequence did not change this fact and therefore did not render copyrightable what otherwise would not have been entitled to protection. Here, however, PhantomALERT is not seeking to protect its process of creating a traffic app database but rather, the database itself. Therefore, Bikram's Yoga does not apply here.

Next, the Court addresses Plaintiff's contention that the "selection or arrangement" of the Points of Interest in its Database reflect originality. See Opposition at 2. As discussed above, both the selection of preexisting material that is included in a compilation and its arrangement may involve sufficient creativity to be protectable. The selection of preexisting material satisfies the originality requirement if the compiler "mak[es] non-obvious choices from among more than a few options." Matthew Bender & Co. v. West Publ'g Co, 158 F.3d 674, 682 (2d Cir.1998). Thus, for example, in Eckes v. Card Prices, Update, the court found that a price directory for baseball cards was copyrightable as a compilation based on the originality associated with selecting 5,000 "premium" cards out of 18,000 listed cards where the same list of premium cards was included in the defendant's baseball card directory. 736 F.2d 859, 862-863 (2d Cir. 1984). Similarly, in cases involving maps, courts have held that where the map's creator exercised sufficient judgment in determining which information to include on the map, copyright protection is available. See, e.g., City of New York v. Geodata Plus, LLC, 537 F. Supp. 2d 443, 451 (E.D.N.Y. 2007) (holding that digital map files containing coordinates that allowed user to view vectorized images of tax blocks in New York was protectable based, in part, on the conclusion that the creators "made decisions concerning which features to incorporate and which to exclude"); Mason v. Montgomery Data, Inc., 967 F.2d 135, 141 (5th Cir. 1992) (finding that maps containing survey data were protectable based, in part, on the fact that creator made independent choice "to select information from numerous and sometimes conflicting sources").

On the other hand, "[a] compilation may lack the requisite creativity where: '(1) industry conventions or other external factors dictate selection so that any person compiling facts of that type would necessarily select the same categories of information; (2) the author made obvious, garden-variety, or routine selections, or (3) the author has a very limited number of options available.'" Silverstein v. Penguin Putnam, Inc., 522 F. Supp. 2d 579, 599 (S.D.N.Y. 2007) (quoting O.P. Solutions Inc. v. Intellectual Property Network Ltd, 52 U.S.P.Q.2d 1818, 1823 (S.D.N.Y. Oct.21, 1999) (citing Matthew Bender & Co, 158 F.3d at 682-83)). For example, in Silverstein, the court found that a compilation aimed at publishing all of the poems of a particular poet that the creator could find was not original. 522 F. Supp. 2d at 599. In Matthew Bender & Co., the Second Circuit found that West Publishing's selection of parallel and alternate citations was not sufficiently original to be protectable because "almost every one of West's decisions relating to citation alterations is inevitable, typical, dictated by legal convention, or at best binary." 158 F.3d at 685.

Arrangement of preexisting materials also may satisfy the originality requirement. For example, in Craigslist Inc. v. 3Taps Inc., the court found that Craigslist had sufficiently alleged a protectable copyright as a compilation where its classified listings were organized in a particular way, first based on geographical area and then in categories of products and services. 942 F. Supp. 2d 962, 972 (N.D. Cal. 2013) (citing Key Pub'ns, Inc. v. Chinatown Today Publ'g Enters., Inc., 945 F.2d 509, 514 (2d Cir.1991)). In Key Publications, the Second Circuit found that the arrangement of a yellow pages directory into categories involved "the de minimis thought needed to withstand the originality requirement," in contrast to the arrangement of information in the white page listings at issue in Feist. 945 F.2d at 514.

Here, Plaintiff has not alleged any specific facts that suggest that the arrangement of the information in its Points of Interest database is characterized by any originality. There are no allegations that the data is organized into categories, for example, or that there is anything creative about the way the data is displayed. Further, to the extent Plaintiff alleges the information in the database is edited so as to alert the driver of the Point of Interest before reaching the actual location, see Compl. ¶ 22, there appears to be no creativity involved in these changes. As discussed above, the arrangement of the Points of Interest on the map merely effectuates the purpose of the database; presumably any app intended to alert drivers of the types of points of interest contained in Plaintiff's database would make very similar changes.

On the other hand, the allegations relating to the selection of the Points of Interest in Plaintiff's database may be sufficient to meet the originality requirement because PhantomALERT alleges it has included only Points of Interest it believes will be important to users of the App. Compl. ¶ 21. It offers as an example the possible omission from its database of a "speed trap" that it determines "does not pose a significant risk to users of the app." Id. Construing these allegations in the light most favorable to Plaintiff, such determinations may involve sufficient exercise of judgment to satisfy the originality requirement and therefore, Plaintiff has alleged that it has a protectable copyright interest in its Database.

Plaintiff has not, however, alleged facts showing that Defendants' conduct falls within the scope of its copyright interest. Although the Complaint expressly alleges that Waze copied the Points of Interest database "in its entirety," it is not apparent from Plaintiff's allegations how any creativity associated with that selection is implicated in the fact that Waze allegedly "incorporated the data" into its own app "in modified form." Complaint ¶¶ 35, 38. Similarly, Plaintiff alleges as to Google only that it "incorporated . . . information from the PhantomALERT Points of Interest database" into its mapping services. Compl. ¶ 52. As discussed above, the copyright protection afforded a compilation is "thin." Thus, for example, in Assessment Technologies of WI, LLC v. Wiredata, Inc., the Seventh Circuit found that the plaintiff had no protectable interest in the data contained in its copyrighted database, even though the program met the originality requirement by virtue of the fact that it grouped the data into fields and categories that were not obvious. 350 F.3d 640, 643 (7th Cir. 2003).

In Assessment Technologies, the program at issue was licensed by the plaintiff to municipalities whose tax assessors used the program to input information into a database and which allowed them to use certain queries to access the data. Id. at 642-43. The defendant sought to obtain the data in the database; it was not interested in the structure of the database but only wanted the "raw data," which it would then "sort according to its own needs." Id. at 643. The court held that the extraction of the raw data from the database would not infringe the copyright, which covered only the arrangement of the data, and that even if the defendant had to copy the entire database, including the categories and fields, in order to extract the data, this would be intermediate copying that constitutes a fair use. Id. at 644-645 (citing Sega Enterprises Ltd. V. Accolade, Inc., 977 F.2d 1510, 1520-28 (9th Cir. 1992) (holding that copying of protected source code solely in order to develop computer games that were non-infringing constituted a fair use because the only effect of enjoining such copying would be to give the plaintiff control over non-infringing products).

PhantomALERT attempts to distinguish Assessment Technologies on the basis that the information contained in the database in that case was obtained and input by third parties (the real estate assessors) whereas the data at issue here was obtained by Waze. This is a distinction without a difference. However the information was obtained, the issue is whether the defendant copied the element of the compilation that was original. The creativity that may have been reflected in PhantomALERT's selection of Points of Interest is not implicated by merely incorporating the "raw data" into Defendants' databases along with other data already contained in those databases. Therefore, the Court concludes that Plaintiff has not alleged a protectable interest as to the information Defendants have allegedly copied and incorporated into their apps and that Plaintiff's copyright claim fails as to both Defendants on that basis. Because it is possible that PhantomALERT can cure this deficiency the Court will permit PhantomALERT to amend its complaint.

5. Whether PhantomALERT is Required to Allege Facts Showing Access

As discussed above, to prevail on a copyright infringement claim a plaintiff must establish, inter alia, that the defendant copied "constituent elements of the work that are original." Benay v. Warner Bros. Entm't, 607 F.3d 620, 624 (9th Cir. 2010) (internal quotations and citations omitted). Where there is no direct evidence of copying, a plaintiff may establish copying by showing "the defendant had access to the plaintiff's work and that the two works are substantially similar." Id. (citation and internal quotations omitted). "Under the 'inverse ratio' rule, if a defendant had access to a copyrighted work, the plaintiff may show infringement based on a lesser degree of similarity between the copyrighted work and the allegedly infringing work." Id. (citing Shaw v. Lindheim, 919 F.2d 1353, 1361 (9th Cir. 1990) (citing 2 M. Nimmer, Nimmer on Copyright § 143.4, at 634 (1976)); Rice v. Fox Broad. Co, 330 F.3d 1170, 1178 (9th Cir.2003)).

Defendants point to the absence of any allegation in the Complaint that they had access to the PhantomALERT "proprietary" database and further assert that the allegations in the Complaint support the opposite conclusion. In particular, they point to the allegations that PhantomALERT declined to give Defendants access to its database and that the apps of both Plaintiff and Defendants depend on crowdsourcing for their information, supporting the conclusion that the data that PhantomALERT alleges was copied from its database was more likely either copied by a PhantomALERT user and uploaded to Defendant's database by that user or uploaded to both Plaintiff's and Defendants' databases by a user. Reply at 7-8 (citing Compl. ¶¶ 2, 3, 29, 34). Defendants concede, however that "if two works are close enough to identical to make any claim of independent creation laughable, additional proof of access will be superfluous." Id. at 9.

Although Plaintiff does not allege specific facts about the Points of Interest it alleges were copied, it does allege that fictitious data used to "seed" its own website appeared on the Waze app. Compl. ¶ 39. This allegation goes beyond the conclusory allegation of copying and taken in the light most favorable to PhantomALERT is sufficient to support an inference that Defendants had access to its database. Therefore, the Court rejects Defendants' assertion that the copyright infringement claim is subject to dismissal on this ground.


For the reasons stated above, the Motion is GRANTED as to the copyright infringement claim, which is dismissed as to both Defendants with leave to amend to allege facts sufficient to support a reasonable inference that Defendants have infringed a protectable copyright interest. Because jurisdiction in this case is based on the existence of a federal question under 28 U.S.C. § 1331 and Plaintiff has not stated a federal claim, the Court does not reach Defendants' challenges to Plaintiff's state law claims. Plaintiff shall file its amended complaint within thirty (30) days of the date of this ORDER.

IT IS SO ORDERED. Dated: December 14, 2015



Chief Magistrate Judge

Summaries of

Phantomalert, Inc. v. Google Inc.

Dec 14, 2015
Case No. 15-cv-03986-JCS (N.D. Cal. Dec. 14, 2015)
Case details for

Phantomalert, Inc. v. Google Inc.

Case Details

Full title:PHANTOMALERT, INC., Plaintiff, v. GOOGLE INC., et al., Defendants.


Date published: Dec 14, 2015


Case No. 15-cv-03986-JCS (N.D. Cal. Dec. 14, 2015)

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